Category Archives: Patent Term Adjustment

Most of the Patent Term Adjustment (PTA) cases being filed in the U.S. District Court for the Eastern District of Virginia involve patents issuing from applications in which a Request for Continued Examination (RCE) was filed, and cite the November 1, 2012 decision of Judge Ellis, III in Exelixis. (That decision, and a conflicting decision … Continue reading this entry

As reported on the House Judiciary Committee website, on May 23, 2013, Congressman Goodlatte (R-Va.) released “a discussion draft of legislation designed to address the ever increasing problem of abusive patent litigation.” This draft legislation comes on the heels of the Patent Abuse Reduction Act of 2013 (S. 1013), which was introduced in the Senate … Continue reading this entry Tags: Exelixis,Goodlatte,Section 145

On April 1, 2013, the USPTO published an “interim final rule” relating to Patent Term Adjustment (PTA), to implement changes to the PTA statute embodied in the AIA Technical Corrections Act. Although the rule changes have an immediate effective date, the USPTO will consider written comments submitted within 60 days, e.g., by May 31, 2013.… Continue reading this entry Tags: HR 6621,Technical Corrections

A number of Patent Term Adjustment (PTA) cases have been filed in the U.S. District Court for the Eastern District of Virginia since the November 1, 2012 decision in Exelixis, Inc. v. Kappos. While most have presented straight-forward fact patterns, one complaint caught my attention because it brings to mind how applicants could manipulate the … Continue reading this entry Tags: Exelixis,Request for Continued Examination (RCE)

As expected, the USPTO has filed a Notice of Appeal in the Exelixis patent term adjustment (PTA) case. As I summarized in this article, in a decision issued November 1, 2012 in Exelixis, Inc. v. Kappos, the U.S. District Court for the Eastern District of Virginia found that the USPTO’s interpretation and application of the … Continue reading this entry Tags: Request for Continued Examination (RCE)

In University of Massachusetts v. Kappos, the United States District Court for the District of Colombia held that an Office Action that was “fundamentally flawed” still stopped the Patent Term Adjustment (PTA) clock that was running against the USPTO under 35 USC § 154(b)(2)(A). The court distinguished this case from the Oncolytics case, where it was the … Continue reading this entry Tags: A Delay,Medarex

In a complaint filed October 19, 2012, Biogen Idec MA Inc. joined patent holders such as Exelixis, Inc. and Human Genome Sciences, Inc., who are challenging the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(i)). As I wrote previously, I think these challenges may have merit, and patent holders facing similar PTA calculations may want to … Continue reading this entry Tags: B Delay,Biogen Idec,Request for Continued Examination (RCE)

Deca-Medics, Inc. has filed a complaint in the U.S. District Court for the Eastern District of Virginia challenging a Patent Term Adjustment (PTA) award based on how its patent application was processed after a Notice of Appeal was filed. While I have written about the problem with the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(ii) and the USPTO is … Continue reading this entry Tags: Appeal,B Delay,Board,C Delay,Deca-Medics,Delay

Although 35 USC § 21(b) provides that a response that falls due on a weekend or Federal holiday is timely when filed on the next business day, we often try to file a response before such a deadline because the USPTO has interpreted the relevant provision of the Patent Term Adjustment (PTA) statute as not … Continue reading this entry Tags: Arqule,Holiday,Weekend

The USPTO has filed a motion requesting reconsideration in Bristol Meyers Squibb Co. v. Kappos, where the U.S. District Court for the District of Columbia found that the statutory deadline for bringing a civil action to challenge the Patent Term Adjustment (PTA) awarded by the USPTO is tolled when the patentee pursues reconsideration of the agency … Continue reading this entry Tags: BMS,Bristol Meyers Squibb,Equitable Tolling,Tolling

In a decision issued January 27, 2012, in Bristol Meyers Squibb Co. v. Kappos, the U.S. District Court for the District of Columbia found that the statutory deadline for bringing a civil action to challenge the Patent Term Adjustment (PTA) awarded by the USPTO is tolled when the patentee pursues reconsideration of the agency decision. … Continue reading this entry Tags: BMS,Bristol Meyers Squibb,Equitable Tolling

In an action that has advanced to the summary judgment stage, ArQule, Inc. is challenging the PTO’s practice of charging “applicant delay” when a response is filed on the next business day after a deadline that fell on a Federal holiday. While a decision in ArQule’s favor could impact numerous patents, the single day at … Continue reading this entry Tags: Arqule,Holiday,Patent Term Adjustment (PTA),Weekend

On April 6, 2011, the USPTO announced proposed changes to the Patent Term Adjustment (PTA) rules that would award PTA for USPTO delay when an examiner reopens prosecution after a notice of appeal has been filed. While I have written previously about the gap left by the USPTO’s current PTA rules, I am afraid that … Continue reading this entry Tags: Appeal,Delay,Patent Term Adjustment (PTA)

Yet another complaint has been filed against the USPTO challenging Patent Term Adjustment. The issue raised in Oncolytics Biotech Inc. v. Kappos is whether a deficient Office Action that was subsequently vacated by the USPTO nevertheless satisfied the USPTO’s obligation to take action within four months of the applicant’s previous reply.… Continue reading this entry Tags: Delay,Kappos,Oncolytics,Patent Term Adjustment (PTA),PTA

Hoffman-La Roche Inc. and Morphosys AG are among the latest patent holders to file a Patent Term Adjustment (PTA) action against the USPTO. Their complaint is somewhat unique in that it challenges the factual basis for PTA deductions based on “Applicant Delay,” rather than challenging the USPTO’s interpretation of the PTA statute.… Continue reading this entry